Appeal No. 2000-1910 Page 7
Application No. 08/785,716
indistinguishable from the prior art wheat flour. If the examiner is able to
establish a prima facie case of anticipation, the burden will shift to appellants to
“prove that the subject matter shown to be in the prior art does not possess the
characteristic relied on.” In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138
(Fed. Cir. 1986).
Other Issue:
We are not persuaded by appellants’ arguments (Brief, page 4) and
evidence (1997 Anderson Declaration6) relating to unexpected results. The
rejection was made under 35 U.S.C. § 102(b), “[t]he discovery of an unobvious
property or use of a previously known composition, even when that property and
use are unobvious from the prior art, can not impart patentability to claims to the
known composition.” In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990). However, if upon further prosecution, a difference between the
6 Brief, Appendix D.
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